Yves St Laurent counterclaimed that Christian Louboutin's
registration for the red sole mark was not validly registered under
Prêt-à-porter: The trial
A number of other parties appeared making representations to the
court on the issue of validity including the International
Trademark Association, Tiffany & Co and a law professor from
Georgetown University in Washington, DC.
At trial, the judge held that single colours operated
functionally in the fashion industry and lacked any trade mark
character, which meant that Christian Louboutin's registration
was likely invalid.
The September Issue: the Appeal Court's findings
The Appeals Court held that a close examination was required of
how colours were used in the relevant trade. There was no reason
why trade reputation or "secondary meaning" could not
develop in a red sole indicating a unique trade source.
On the facts, Christian Louboutin had established reputation in
its red sole as a trade mark but only in relation to shoes with a
contrasting coloured upper, not monochromatic red shoes.
The Appeals Court modified Christian Louboutin's trade mark
registration and this allowed Yves St Laurent to avoid a finding of
The position in Australia
In Australia, the Christian Louboutin application for
registration of the red sole trade mark has been accepted on the
provision of evidence of distinctiveness/secondary meaning, but
without any restriction in relation to the colour of the rest of
Australian Trade Mark 1352410
(International Registration 1031242)
It will be interesting to see if the Registrar will consider
revising the scope of Christian Louboutin's Australian
application in the light of the US decision.
In my view, there is not any valid reason why secondary
meaning/reputation should be required, since there is no convention
that shoe soles be coloured red, and no reason for other traders to
do this in order to engage in legitimate competition.
Clayton Utz communications are intended to provide
commentary and general information. They should not be relied upon
as legal advice. Formal legal advice should be sought in particular
transactions or on matters of interest arising from this bulletin.
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